STAR device mark struck down by Full Federal Court

In Starr Partners Pty Limited v Dev Prem Pty Ltd, the Full Federal Court has reversed an earlier order dismissing an allegation of trademark infringement in relation to a STAR REALTY (and Star device) mark.

Starr Partners Pty Ltd is engaged in a real estate franchise business in New South Wales under the name Starr Partners. It owns a registration for the trademark STARR PARTNERS (and Star device). Dev Prem Pty Ltd carries on business as a real estate agent in certain northern suburbs of Brisbane in Queensland, using the unregistered trademark STAR REALTY (and Star device). Both of the trademarks included a partial Star device, and the respective uses of the words 'STARR' and 'STAR' both had the initial letter 'S' larger than the other letters. Based on its STARR PARTNERS device mark, Starr Partners brought infringement proceedings against Dev Prem.

The primary judge said that the test for deceptive similarity is "one of impression based on recollection: … which will be an imperfect recollection, measured against a standard of side by side comparison". He held that the visual and aural differences between the two marks were too great for there to be a real and tangible danger of deception or confusion. In reaching this conclusion, he gave weight to the differences between:

• the words 'STAR' and 'STARR';
  
  
• the words 'PARTNERS' and 'REALTY'; and
  
  
• in colouring.

Accordingly he found that the marks were not deceptively similar and that there was no trademark infringement. Starr Partners appealed.

The Full Federal Court agreed with the primary judge that a side by side comparison of trademarks has some role to play in the test of deceptive similarity. However, it held that the judge erred in giving too much prominence to such a comparison at the expense of considerations such as imperfect recollection.

The court decided that the essential feature of both marks was the Star device, its close relationship with the initial capital letter 'S' of the first word in each mark, and the idea or concept of a 'star'. It found that Starr Partners had taken advantage of the association between the family name Starr and the idea of a star, resulting in attention being drawn away from the double 'r' ending of 'Starr' as signifying a family name.

The court decided that:

• the non-essential features of the marks were the words 'PARTNERS' and 'REALTY' respectively;
  
  
• such words were non-distinctive in the context of real estate services; and
  
  
• they would be readily dismissed by the hypothetical observer.

Appellate courts are reluctant to overturn the views of primary judges on matters of impression, since those judges have the benefit of hearing all relevant evidence. However, in this case, the appellate court believed that there had been a clear error of law and allowed the appeal.

Kathy Mytton and Sean McManis, Shelston IP, Sydney